Monday, March 20, 2023

Hantz software; claims not asserted are not part of judgment

The conclusion:

Because, in view of the foregoing, we agree that the operative complaint asserted infringement of only claims 1 and 31–33 of each asserted patent, and because Sage did not file any counterclaim of its own (instead, it simply moved to dismiss Hantz’s complaint), we conclude that the ineligibility judgment should apply to only claims 1 and 31–33 of the asserted patents. We therefore vacate the district court’s judgment insofar as it held any claim other than claims 1 and 31–33 of each asserted patent ineligible and affirm in all other respects.

Monday, March 13, 2023

Stipulation vacated in Amazon case

The outcome:

In this patent infringement action, the parties entered into a stipulation of non-infringement based on two of the district court’s claim construction rulings. Because the stipulation is ambiguous and therefore defective, we vacate and remand for further proceedings.

In past cases, we have held that stipulated judgments are defective if they are ambiguous in material respects. See Jang v. Bos. Sci. Corp., 532 F.3d 1330, 1335–36 (Fed. Cir. 2008). The stipulated judgment here provides that Amazon does not infringe under the district court’s constructions of “cooperating service provider” and “non-blocking bandwidth.” Under the circumstances of this case, the stipulation does not provide sufficient detail to allow us to resolve the claim construction issues presented on appeal. First, the stipulation does not identify which claims of the ’471 patent remain at issue in this appeal. We have vacated judgments that fail to identify which claims are implicated by the judgment. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1342 (Fed. Cir. 2002) (vacating a judgment in part “[b]ecause the district court did not . . . identify the specific claims it held to be infringed under the doctrine of equivalents.”). More importantly, it is unclear whether the judgment requires the affirmance of both “cooperating service provider” and “non-blocking bandwidth,” where the interpretation of cooperating service provider includes the term “non-blocking bandwidth.”4 It is also unclear whether affirmance requires the approval of all aspects of the construction of “cooperating service provider.”

It is unclear whether, under the stipulation, Amazon prevails on infringement if either construction is correct or only if both are correct. At oral argument, it became apparent that the parties have significant disagreements as to the effect of the stipulation—disagreements that render it impossible for this court to review the judgment. AlterWAN asserts that the judgment of non-infringement rests solely on the district court’s construction of “non-blocking bandwidth,” a term which appears both independently and in the district court’s construction of “cooperating service provider.” AlterWAN argues that the district court’s construction requires bandwidth to be available to the customer at all times, even when the Internet is inoperable. Because no system can provide such a service, Amazon cannot infringe. At oral argument, AlterWAN took the position that the “sole reason” Amazon does not infringe under the claim constructions at issue is because of the exclusion of the caveat they had sought at claim construction (“while the network is operational”). This is so because “if the internet goes down, it doesn’t provide service.” Oral Arg. at 0:30–1:14; see also Oral Arg. at 31:02– 19 (“Q: Let’s adopt your construction of non-blocking bandwidth, which doesn’t have that limitation, it only requires that . . . available when the internet is operable, okay? Is your view that they infringe under that claim construction? A: Yes, Your Honor.”). In AlterWAN’s view, the core issue on appeal is whether the district court erred by failing to add the qualifier “while the network is operational” to its construction of “non-blocking bandwidth.”

Appellant Apple scores partial victory

The outcome:

We affirm in part and reverse in part. We affirm the unreviewability dismissal of plaintiffs’ challenges to the instructions as being contrary to statute and arbitrary and capricious. No constitutional challenges are presented. But we reverse the unreviewability dismissal of plaintiffs’ challenge to the instructions as having been improperly issued because they had to be, but were not, promulgated through notice-and-comment rulemaking under 5 U.S.C. § 553. That challenge, we also hold, at least Apple had standing to present. We remand for further proceedings on the lone surviving challenge. Like the district court, we do not reach the merits of that challenge.

Of note

We then address the remaining challenge (concerning the absence of notice-and-comment rulemaking). We hold that neither § 701(a)(1) nor § 701(a)(2) bars review of the third challenge and that at least Apple has standing to press it. We therefore reverse the dismissal as to the third challenge and remand

Appellant Intel wins at the CAFC

Appellant Intel prevails:

The Patent Trial and Appeal Board (“Board”) determined that Intel Corp. (“Intel”) failed to show that claim 5 of U.S. Patent No. 9,250,908 (“the ’908 patent”) was unpatentable as obvious in light of prior art references Kabemoto and Bauman.1 Intel Corp. v. PACT XPP Schweiz AG, No. IPR2020-00518, Paper 34, 2021 WL 3503434 (P.T.A.B. Aug. 9, 2021) (“Final Written Decision”). We reverse and remand.


PACT XPP Schweiz AG (“PACT”) owns the ’908 patent, which relates to multiprocessor systems and how processors in those systems access data. Multiprocessor systems typically store data in several places: there’s a main memory, where all of a system’s data is stored, as well as various cache memories, where smaller pieces of that same data are stored. Cache memories are closer to the processors, allowing the processors quicker access to the data available in a given cache. And a system can use multiple cache levels, where a primary cache is closer to the processer but can store less data than a further-away secondary cache. The use of multiple cache memories can pose problems for cache coherency, though. Different caches can have local copies of the same data, so inconsistencies may arise if one processor changes its local copy of the data and that change isn’t propagated to the other copies of that data. That’s why multiprocessor systems often require a mechanism to monitor and maintain cache coherency. One way to maintain cache coherency is by “snooping” along a shared “bus.” See J.A. 1911; Kabemoto Fig. 3. Another way to maintain cache coherency is by using a global, segmented secondary cache. See Bauman Fig. 6. Both of these mechanisms use a shared entity between processors to detect changes between, and ultimately make changes to, local data copies. See Kabemoto col. 17 l. 27–col. 18 l. 6; Bauman col. 5 l. 55–col. 6 l. 40.

Intel's argument

What the prior art discloses and whether a person of ordinary skill would have been motivated to combine prior art references are both fact questions that we review for substantial evidence. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). “Substantial evidence is such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1324 (Fed. Cir. 2017) (cleaned up). Intel argues that two of the Board’s conclusions about underlying independent claim 4 lack substantial evidence. First, Intel asserts that substantial evidence does not support the Board’s determination that the prior art fails to disclose the segment-to-segment limitation. And second, Intel contends that substantial evidence does not support the Board’s determination that there was no motivation to combine Kabemoto and Bauman. We agree on both counts.

Of the second argument

Intel also argues that the Board’s rejection of its “known-technique” rationale for a motivation to combine lacks substantial evidence.3 Appellant’s Br. 57–63 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797 (Fed. Cir. 2021) (determining that the Board’s reasons for finding a lack of motivation to combine were not supported by substantial evidence “[u]nder applicable legal principles”). We agree and reverse the Board’s contrary finding.


Additionally, “universal” motivations known in a particular field to improve technology provide “a motivation to combine prior art references even absent any hint of suggestion in the references themselves.” Intel, 21 F.4th at 797–99 (cleaned up) (emphasis in original) (determining that the Board’s rejection of “increasing energy efficiency,” a “generic concern” in electronics, as a motivation to combine lacked substantial evidence (cleaned up)). Similarly, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. This is the so-called “known-technique” rationale. And if there’s a known technique to address a known problem using “prior art elements according to their established functions,” then there is a motivation to combine. Intel, 21 F.4th at 799–800. And we specify address a known problem because “[i]t’s not necessary to show that a combination is the best option, only that it be a suitable option.” Id. at 800 (cleaned up) (emphasis in original).

Wednesday, March 08, 2023

UMinnesota loses at CAFC. "Blaze marks" interpreted.

The outcome was appellant lost:

The Regents of the University of Minnesota (“Minnesota”) appeal from a final written decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) holding that claims 1−9, 11−21, and 23−28 of U.S. Patent 8,815,830 are unpatentable as anticipated by the asserted prior art. Gilead Scis., Inc. v. Regents of the Univ. of Minn., No. IPR2017-01712, 2021 WL 2035126 (P.T.A.B. May 21, 2021) (“Decision”). For the following reasons, we affirm.

Subject matter

This appeal pertains to an inter partes review (“IPR”) in which Gilead Sciences, Inc. (“Gilead”) filed a petition challenging claims of the ’830 patent directed to phosphoramidate prodrugs of nucleoside derivatives that prevent viruses from reproducing or cancerous tumors from growing.

"Blaze marks" again

The written description requirement of 35 U.S.C. § 112 reflects the basic premise of the patent system, viz., that one discloses an invention and, if it also fulfills the other requirements of the statute, one obtains a patent. Quid pro quo. Judicial gloss in the case law reflects the need that the disclosure show that one actually made the invention that one is claiming, i.e., that it possessed the invention as claimed. “The purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003). Written description of an invention claimed as a genus of chemical compounds, as here, raises particular issues because, as we have held, written description of a broad genus requires description not only of the outer limits of the genus but also of either a representative number of members of the genus or structural features common to the members of the genus, in either case with enough precision that a relevant artisan can visualize or recognize the members of the genus. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350−52 (Fed. Cir. 2010) (en banc). A broad outline of a genus’s perimeter is insufficient. See id. But Minnesota is not arguing in this case that it described a sufficient number of species to constitute a written description of the claimed subgenus. Rather, Minnesota asserts that its earlier NP2-P1 applications literally described, or provided blaze marks to, the subgenus of the ’830 claims in its broad outlines. The Board held that they did not, and we agree.


Evaluating whether the written description requirement is satisfied involves “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., 598 F.3d at 1351. For genus claims, which are present here, we have looked for blaze marks within the disclosure that guide attention to the claimed species or subgenus. In re Ruschig, 379 F.2d 990, 994–95 (CCPA 1967); Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996); see also Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1326–27 (Fed. Cir. 2000). (Here, the parties use language such as genus and subgenus to refer to the various disclosures involved in this inquiry. The disclosure of NP2-P1, being broader than claim 1 of the ’830 patent, has a relationship of genus to the narrower subgenus of the ’830 patent claims. We will use this language of the parties.) The primary considerations in a written description analysis are factual and must be assessed on a case-by-case basis. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir. 1991). We thus review the Board’s decision regarding written description for substantial evidence. Gartside, 203 F.3d at 1316.

And "laundry list"

The same is true here. The claims of P1 recite a compendium of common organic chemical functional groups, yielding a laundry list disclosure of different moieties for every possible side chain or functional group. Indeed, the listings of possibilities are so long, and so interwoven, that it is quite unclear how many compounds actually fall within the described genera and subgenera. Thus, we affirm the Board’s decision that there is no ipsis verbis written description disclosure provided by P1 claim 47 sufficient to support the ’830 patent’s claims.

Ariad again

Minnesota further argues that the Board erred in failing to consider the holdings in Ariad. In so doing, Minnesota mischaracterizes Ariad as holding that merely “disclosing ‘structural features common to the members of [a] genus’ demonstrates possession of, and thereby supports, the claimed genus.” Appellant’s Br. at 5. That is not what Ariad held. As the Board recognized, sufficiently describing a genus under Ariad requires a description of a claimed genus disclosing either (1) “a representative number of species falling within the scope of the genus,” which the parties do not dispute is lacking here, or (2) “structural features common to the members of the genus,” either of which must enable “one of skill in the art [to] ‘visualize or recognize’ the members of the genus.” Decision at *4; Ariad, 598 F.3d at 1350 (emphasis added). As indicated, the first requirement is not at issue here. As for the second, the Board addressed the question whether one of skill in the art would have been able to visualize or recognize the members of the claimed genus by “search[ing] for blaze marks that guide a skilled artisan to the claimed subgenera.” Decision at *10. That was not error. Regarding whether common structural features must exist between a claim and a putative priority disclosure, those features must constitute the near-entirety of the structures being compared. But the structures here are so extensive and varied that the structures of P1 claim 47, which, through its multiple dependencies, encompasses a significantly larger genus than that claimed in the ’830 patent, are not sufficiently common to that of claim 1 of the ’830 patent to provide written description support. Finding no adequate blaze marks, the Board concluded that NP2-P1 do not provide sufficient written description to support the ’830 patent claims.

Tuesday, February 28, 2023

CAFC does "Ballyhoop." Attorney fee issues.

An attorneyees issue:

Barracuda Tackle LLC, Florida Fishing Tackle Manufacturing Company, Inc., and David Burton Young (collectively, “Barracuda”) appeal the decision of the United States District Court for the Middle District of Florida that denied Barracuda attorney fees under 35 U.S.C. § 285. Dominguez v. Barracuda Tackle LLC, No 8:20-cv-1538- KKM-AEP, 2021 WL 5998127 (M.D. Fla. Dec. 20, 2021). For the reasons set forth below, we affirm.

Some details

Yunior Dominguez and Salt Addict, Inc. d/b/a The Ballyhoop (collectively “Ballyhoop”) filed a complaint against Barracuda for infringement of U.S. Patent No. 10,165,764 (“the ’764 patent”) in the United States District Court for the Southern District of Florida. The ’764 patent is directed to a collapsible fishing bait net, i.e., a net that can be used to capture small fish that can be used as bait to catch larger fish. ’764 Patent col. 1 ll. 12–42. Ballyhoop alleged that Barracuda’s bait nets infringed claims 1 and 3 of the ’764 patent directly or indirectly, either literally or under the doctrine of equivalents.1 Barracuda filed a motion to dismiss, arguing that Ballyhoop had failed to state a claim and that the Southern District of Florida constituted an improper venue for the suit. Barracuda also filed a motion for claim construction, a motion for summary judgment of non-infringement, and a motion seeking sanctions under Federal Rule of Civil Procedure 11 against Ballyhoop for bringing a purportedly frivolous claim. Ballyhoop responded only to the motion to (...)

(...) With regard to Barracuda’s motion for sanctions, the magistrate judge determined that Ballyhoop’s suit was not frivolous and that Ballyhoop had demonstrated an effort to engage in a pre-suit investigation of its infringement claim. “Further,” the magistrate judge noted, “a reasonable juror could conclude that the Accused Product and the collapsible bait net claimed in the ’764 Patent perform substantially the same function with substantially the same result but just not as to the way in which each achieves that result, especially in light of the claims construction.” Id. Accordingly, the magistrate judge recommended that Barracuda’s motion for sanctions be denied. Id.


After judgment was entered in its favor, Barracuda filed a motion seeking an award of attorney fees under 35 U.S.C. § 285. The magistrate judge issued a Report and Recommendation that Barracuda’s request be denied. J.A. 9–21. In reaching this conclusion, the magistrate judge rejected Barracuda’s argument that the case was exceptional because Ballyhoop’s infringement position was unreasonable, noting that, in the context of Barracuda’s motion for sanctions under Rule 11, the court had found Ballyhoop had maintained a nonfrivolous claim for patent infringement and had demonstrated an effort to engage in pre-suit investigation of the claim. J.A. 14–16. The magistrate judge also considered and rejected Barracuda’s argument that the case was exceptional because Ballyhoop had engaged in litigation misconduct and because Ballyhoop had bad-faith motivation in bringing the suit. J.A. 16–18.

Drug de-listing issue tackled by CAFC in Jazz v. Avadel

In Jazz v. Avadel:

Jazz Pharmaceuticals, Inc. (“Jazz”) appeals from an order of the United States District Court for the District of Delaware granting a motion for an injunction brought by Avadel CNS Pharmaceuticals, Inc. (“Avadel”). See Jazz Pharms., Inc. v. Avadel CNS Pharms., LLC, No. 21-cv00691, 2022 WL 17084371 (D. Del. Nov. 18, 2022) (“Decision”). The injunction directed Jazz to take measures to delist U.S. Patent 8,731,963 (“the ’963 patent”) from the U.S. Food and Drug Administration’s (“the FDA’s”) Approved Drug Products with Therapeutic Equivalence Evaluations publication, more colloquially known as the “Orange Book.” For the following reasons, we lift our stay of the injunction and affirm.

The drug at issue:

Jazz holds an approved New Drug Application (“NDA”) for the narcolepsy drug Xyrem®. J.A. 1445. Xyrem’s active ingredient is sodium gamma-hydroxybutyrate (“GHB”), which is also known as sodium oxybate. Id. GHB exerts a heavily sedating effect, which is theorized to grant deepened nighttime sleep, resulting in improved daytime wakefulness. GHB is prone to heavy misuse and is infamously known as a date-rape drug. Given that misuse, the FDA conditioned approval of Jazz’s NDA upon development of Risk Evaluation and Mitigation Strategies (“REMS”), which include protocols that must be followed prior to prescribing or dispensing Xyrem. Id. Xyrem’s REMS originally restricted distribution to a single-pharmacy system, although the FDA waived that requirement in 2017. J.A. 5660. The ’963 patent relates to Jazz’s single-pharmacy distribution system, which controls access to abuse-prone prescription drugs prescribed to narcolepsy patients through a central pharmacy and computer database by tracking prescriptions, patients, and prescribers.

Jazz loses:

Jazz asserts that, in 2014, the regulatory framework permitted Jazz to list the ’963 patent, which, it says, at a minimum fell into a category of patents neither required nor forbidden to be listed. According to Jazz, because it was permissive to list the ’963 patent in 2014, § 355(c)(3)(D)(ii)(I) does not provide Avadel with the power to request an order to delist it now. We disagree. As the district court correctly analyzed, the delisting statute does not require us to consider whether the patent holder violated the law by listing the patent in the first instance. It simply provides that those accused of infringing a listed patent may request an order requiring the patent holder to correct or delete listings for patents that do not claim the drug or a method of using the drug. As the ’963 patent claims neither and has been asserted in a patent infringement action against Avadel, § 355(c)(3)(D)(ii)(I) provides Avadel with a delisting remedy. The district court therefore correctly ordered Jazz to seek delisting of the ’963 patent from the Orange Book. CONCLUSION We have considered Jazz’s remaining arguments and find them unpersuasive. For the foregoing reasons, we affirm and lift our stay of the injunction requiring Jazz to ask the FDA to delist the ’963 patent. As the original date to comply with the injunction has expired, we modify the injunction insofar as restarting the 14-day period for compliance prescribed by 21 C.F.R. § 314.53(f)(2)(i) to be within 14 days of this decision.

Monday, January 30, 2023

Mark Lemley loses at CAFC; the intersection of KSR and design patents

The outcome of the case was that LKQ (represented by Mark Lemley; MARK A. LEMLEY, Lex Lumina PLLC, New York, NY, argued for appellants. ) lost its appeal:

LKQ Corp. and Keystone Automotive Industries, Inc. (collectively, “LKQ”) appeal from a final written decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) holding that LKQ failed to show by a preponderance of the evidence that U.S. Patent D797,625 (the “’625 patent”) was anticipated or would have been obvious over the cited prior art before the effective filing date. See LKQ Corp. v. GM Glob. Tech. Operations LLC, IPR2020-00534, Paper 28 (P.T.A.B. Aug. 4, 2021) (“Decision”), J.A. 1–60. For the reasons provided below, we affirm.

Judge Lourie wrote additional views to the per curiam opinion.

The panel resolves this case by determining that substantial evidence supports the Board’s conclusion that the claims of the ’625 patent are not unpatentable as anticipated or obvious. I agree. I write separately to respond to the assertion by appellant that the Board improperly relied on our predecessor court’s Rosen decision for its rationale in deciding its case. Appellant argues that Rosen, whatever its validity at the time it was decided, is inconsistent with, and hence was implicitly overruled, by the Supreme Court in KSR. The panel resolves the case without having to reach this issue, but I comment separately on the argument appellant raises, but which we do not reach. Rosen was decided by the Court of Customs and Patent Appeals in 1982, sitting with its usual en banc panel of Judges Markey, Rich, Baldwin, Miller, and Nies, hardly a group unversed in patent law. Rosen, in reversing the Patent Office’s Board of Appeals, stated that “there must be a reference, a something in existence, the design characteristics of which are basically the same as the claimed design in order to support a holding of obviousness.” In re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982) (citing In re Jennings, 182 F.2d 207, 208 (C.C.P.A. 1950)). Appellant argues that the Supreme Court in reviewing Teleflex, Inc. v. KSR Int’l Co., 119 Fed. Appx. 282 (Fed. Cir. 2005), a non-precedential decision of ours that recited almost as boilerplate the longstanding requirement that, in evaluating a combination of references asserted to render a claimed invention obvious, there must be some teaching, suggestion, or motivation shown in the prior art to combine the references, overruled Rosen. The Court stated, “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation . . . .” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). The Court did note that the teaching, suggestion, and motivation test “captured a helpful insight,” but it found it overly “rigid.” Id. at 418. That essentially is the broad concept that appellant now asserts has overruled an almost forty-year-old design patent decision that this court has been bound to follow and has continued to follow in the decade since KSR was decided. I disagree. First, KSR did not involve design patents, which is the type of patent we have here before us. Utility patents and design patents are distinct types of patents. Utility patents protect processes, machines, manufactures, compositions of matter, and improvements thereof. But their inventions must be “useful.” 35 U.S.C. § 101. A design patent protects ornamentation, the way an article looks, 35 U.S.C. § 171. See M.P.E.P. § 1502.01. Claims and claim construction in design patents are thus quite different compared with utility patents. See Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1294 (Fed. Cir. 2010) (questioning how “a court could effectively construe design claims, where necessary, in a way other than by describing the features shown in the drawings.”); Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc) (citing Dobson v. Dornan, 118 U.S. 10, 14 (1886)) (finding that a design is better represented by an illustration than a description).

While 35 U.S.C. § 103, which deals with obviousness, does not differentiate between types of inventions, and hence applies to all types of patents, the considerations involved in determining obviousness are different in design patents. Obviousness of utility patents requires considerations such as unexpected properties, utility, and function. Design patents, on the other hand, relate to considerations such as the overall appearance, visual impressions, artistry, and style of ornamental subject matter. Ornament is in the eyes of the beholder. Functional utility is objective. What is the utility or function of something that is ornamental? To be sure, it may also be functional and have use, as do the fenders in the case before us, but that function is beside the point when considering whether its ornamental features would have been obvious. And what is an unexpected property in the context of design patents, for it must be related to ornament, as function is not to be considered in evaluating obviousness of a design? Obviousness of an ornamental design thus requires different considerations from those of a utility invention. KSR did not address any of these considerations, and it did not even mention design patents. Surely, it did not intend to speak to obviousness of designs, and what was said about a test long applied to utility inventions was not indicated to apply to design patents. It cannot reasonably be held to have overruled a precedent of one of our predecessor courts involving a type of patent it never mentioned. A comprehensive review of obviousness in design patents, Overcoming the “Impossible Issue” of Nonobviousness in Design Patents, supports the view that “KSR has very limited, if any, applicability to design patents.” Janice M. Mueller and Daniel Harris Brean, 99 KY. L. J., 419, 518 (2011). It further states that, “[m]ost of the KSR Court’s discussion is completely irrelevant to what design patents protect.” Id. It notes that “[t]he subject matter of a design patent is fundamentally different from a utility patent, as evidenced by the separate statutory provisions that define the eligible subject matter of each type of patent.” Id. “Indeed, a patented design ‘need not have any practical utility,’ the antithesis of a utility invention.” Id. Second, while Rosen may have overstated its point in adding to the quoted Jennings language such as that the primary reference must have design characteristics that are “basically the same” as those of the claimed design, this statement hardly reflects the rigidity the Court was condemning in KSR. 673 F.2d at 391. And finally, Rosen was not essentially incorrect. In any obviousness analysis, the question is whether the claimed invention was obvious, but obvious over what. One has to start from somewhere. See K/S Himpp v. Hear-Wear Techs., 751 F.3d 1362, 1366 (Fed. Cir. 2014) (finding that an examiner may not rely on his common knowledge without a supporting prior art reference) (citing M.P.E.P. § 2144.03).

Saturday, January 21, 2023

Uanticipated hazards in the court house

A lot can go wrong when one goes to court.

One thing one does not usually worry about is a killer soap dispenser, the squirts one's torso, rather than hands.

Thursday, January 19, 2023

CAFC overrules conclusion of indefiniteness in Grace Instrument case

The outcome:

Grace Instrument Industries, LLC (Grace) appeals a claim construction order issued by the United States District Court for the Southern District of Texas finding the term “enlarged chamber” indefinite and construing the term “means for driving said rotor to rotate located in at least one bottom section.” As a result of the district court’s order, the parties stipulated that asserted claims 1, 2, 4, 5, 7–9, 11, 14, 15, and 17 of U.S. Patent No. 7,412,877 (’877 patent) are invalid and that claims 4, 5, 7–9, 11, 14, 15, and 17 are not infringed, and the court entered final judgment in favor of Chandler Instruments Company, LLC (Chandler). Because the district court erred in its analysis of the term “enlarged chamber,” we vacate the district court’s determination that “enlarged chamber” is indefinite and remand for further proceedings consistent with this opinion. We affirm the district court’s construction of “means for driving said rotor to rotate located in at least one bottom section.”


A “patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014). “The ultimate conclusion that a claim is indefinite under 35 U.S.C. § 112, ¶ 2 is a legal conclusion, which we review de novo.” Cox Commc’ns, Inc. v. Sprint Commc’n Co., 838 F.3d 1224, 1228 (Fed. Cir. 2016) (citation omitted). “As in claim construction, we review a district court’s underlying factual determinations for clear error.” Id. (citations omitted). Moreover, “[a]ny fact critical to a holding on indefiniteness . . . must be proven by the challenger by clear and convincing evidence.” Id. (alteration in original) (citation and internal quotation marks omitted).


Thus, although “enlarged chamber” is not a term of art, the intrinsic record sufficiently guides a skilled artisan to the meaning of that term as used in the ’877 patent. The district court erred in its reliance on extrinsic evidence— i.e., dictionary definitions—that contradict the scope and meaning of “enlarged chamber” that a skilled artisan would ascertain by reading the intrinsic record. See Phillips, 415 F.3d at 1322–23; see also id. at 1316 (“[O]ur cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.”); Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016) (“The only meaning that matters in claim construction is the meaning in the context of the patent.”).


In sum, we find the term “enlarged chamber” in the ’877 patent to mean “a chamber that is large enough to contain excess test sample prior to pressurization to prevent mixing of the test sample and pressurization fluid in the lower measurement zone when the test sample is pressurized to maximum rated pressure.” We thus vacate the district court’s determination that “enlarged chamber” is indefinite, vacate the district court’s invalidity determinations based thereon, and remand for further proceedings consistent with this opinion.

Synqor loses at CAFC in appeal related to DC to DC conversion

In Synqor v. Vicor, the final result at the CAFC was:

In 2017, we affirmed-in-part, vacated-in-part, and remanded the Patent Trial and Appeal Board’s (Board) decision in an inter partes reexamination of U.S. Patent No. 8,023,290 (’290 patent). Vicor Corp. v. SynQor, Inc., 869 F.3d 1309, 1312 (Fed. Cir. 2017) (SynQor III). On remand, the Board held all of the ’290 patent’s claims unpatentable under 35 U.S.C § 103 over two different combinations of references. Because the Board’s fact findings are supported by substantial evidence and its unpatentability determination is correct as to the second combination of references, we affirm.

The technology

The ’290 patent is entitled “High Efficiency Power Converter” and claims a system for DC-DC power conversion— i.e., converting a direct current (DC) source from one voltage level to another. ’290 patent col. 17 l. 9 – col. 18 l. 35. The ’290 patent is part of a patent family owned by SynQor, Inc. (SynQor) involving DC-DC conversion, and we have previously discussed that technology in SynQor III. See 869 F.3d at 1312–15. The ’290 patent family describes a “two-stage architecture” for DC-DC converters, which SynQor refers to as “Intermediate Bus Architecture” (IBA). Id. at 1314. The ’290 patent claims a particular type of IBA converter implemented using switching regulators. Id.; ’290 patent col. 17 ll. 26–30

Overview of arguments

We review the Board’s ultimate obviousness determination de novo and its underlying factual findings for substantial evidence. PersonalWeb Techs., LLC v. Apple, Inc., 917 F.3d 1376, 1381 (Fed. Cir. 2019) (citation omitted). Relevant here, factual findings underlying an obviousness determination include: (1) whether a skilled artisan would have been motivated to modify the teachings of a reference, and (2) whether there is a nexus between secondary considerations of nonobviousness and the claimed invention. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327, 1331– 32 (Fed. Cir. 2016). A patentee may establish nexus by showing that the secondary considerations evidence is a “direct result of the unique characteristics of the claimed invention.” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373–74 (Fed. Cir. 2019) (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). For patents claiming combinations of prior art features, a patentee must show that the secondary considerations evidence is “attributable to the claimed combination of [prior art features], as opposed to, for example, prior art features in isolation or unclaimed features.” Id. at 1378 (citing Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1034 (Fed. Cir. 2016)).

Of secondary considerations

SynQor’s arguments fail because it has not shown that its relied-on success, skepticism, adoption, or praise, etc., were a “direct result of the unique characteristics of the claimed invention”—in this case, were “attributable to the claimed combination of [prior art features], as opposed to, for example, prior art features in isolation or unclaimed features.” Fox Factory, 944 F.3d at 1373–74, 1378 (citation omitted). We do not discern any showing by SynQor on appeal before this court or in the Board proceeding that there was a nexus between its secondary considerations evidence and the claimed combination of features in the ’290 patent—i.e., an IBA converter using switching regulators.

Of waiver of arguments

SynQor did not make either of these arguments in its opening brief, and thus these arguments are waived. See SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1319 (Fed. Cir. 2006) (“[A]rguments not raised in the opening brief are waived.”). AND SynQor’s remaining two arguments were not presented to the Board: (1) skilled artisans would not have been motivated to select Steigerwald ’090’s circuit for modification because two-stage architectures had been discredited, Appellant’s Br. 57–58; and (2) Pressman teaches away from using a two-stage architecture, id. 61–62, 65. SynQor forfeited these arguments by not first raising them to the Board, and we decline to address these fact-bound contentions in the first instance. See In re Google Tech. Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020) (explaining that an argument not presented to the tribunal under review is forfeited absent exceptional circumstances).